Ex parte Gerzymisch
In Ex parte Gerzymisch (Appeal 2010-004710 in U.S. Application Serial No. 11/541,443) the Board of Patent Appeals and Interferences (BPAI) addressed an examiner’s contention that certain components in a step of “receiving a block of software offerings”, and particularly specific lower level components of the software offerings, would have been obvious as a matter of design choice. The examiner asserted:
[it] would have been obvious to the skilled artisan [to include the rest of the components set forth in the receiving step because it] would have been an obvious matter of design choice in light of the method and system already disclose[d] by Kroening. Such modification would not have otherwise affected the method and system of Kroening and would have merely represented one of numerous steps or elements that the skilled artisan would have found obvious for the purposes already disclosed by Kroening. Additionally, applicant has not persuasively demonstrated the criticality of providing this step versus the steps disclose[d] by Kroening. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
The Board did not accept that contention by the examiner. The Board pointed out:
However, the Examiner has not provided a convincing line of reasoning as to why the custom software configuration method would include the specific lower level components recited in independent claim 1. The mere fact that choosing specific lower level components would have been a “design choice” is insufficient without an explanation as to why those specific lower level components would have been desirable. For example, the Examiner must articulate what purpose in Kroening would have been served by modifying it to include “a configuration range for a stock keeping unit (SKU),” as recited in independent claim 1.
In this instance, although the Board did not accept the examiner’s contention, the Board implied a fairly low level of explanation of the argued modification of the prior art was needed to be articulated by the examiner. It is unclear if the Board would have been satisfied by a mere articulating of the purpose served by including the claim limitation of establishing “a configuration range for a stock keeping unit (SKU)”. The Board also did not indicate whether such an explanation would have to be based on any disclosure in prior art references, or what level of explanation would avoid a hindsight reasoning by the examiner.